WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TWAComm.com, Inc. v. Chris Manouel /Domains by Proxy, Inc.
Case No. D2008-0843
1. The Parties
Complainant is TWAComm.com, Inc., of Huntington Beach, California, United States of America, represented by Rutan & Tucker, LLP, United States of America.
Respondent is Chris Manouel/Domains by Proxy, Inc., of Dallas, Texas, United States of America and Richardson, Texas, United States of America. Chris Manouel is represented by Law Offices of Monty J. Buhrow, PLLC, United States of America.
2. The Domain Names and Registrar
The disputed domain names <twacommm.com>, <twaphone.com> and <twaphones.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2008. On June 3, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On June 3, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.1 The Center sent an email communication to Complainant on June 4, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 10, 2008. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2008.2 The Response was filed with the Center on July 15, 2008.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 23, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 17, 2008, Complainant filed a “Motion for Leave to File Reply and Exhibits.” In its Administrative Panel Order No. 1, dated July 29, 2008, the Panel denied the motion.
4. Factual Background
Complainant is the owner of U.S. Trademark Registration No. 2,987,503 for the mark TWACOMM.COM and Design, as used in connection with “on-line retail services and electronic catalog services featuring equipment and accessories used in telecommunications, namely, telephones, voicemail systems and answering machines, telephone amplifiers, headsets, telephone accounting software and data recorders, recorders and players for on-hold messages and music, paging amplifiers and speakers, telephone batteries, telephone installation equipment, facsimile machines, local area network switches, adapters, cards, hubs, and routers. The registration issued on August 23, 2005. According to the database maintained by the United States Patent and Trademark Office, the date of first use of the mark is October 1, 1999. Complaint, Annex 3.
The disputed domain names <twacommm.com>, <twaphone.com>, and <twaphones.com> were registered on August 11, 2006, October 19, 2007, and October 19, 2007, respectively.
5. Parties' Contentions
Complainant submits that the domain name <twacommm.com> incorporates Complainant's mark in its entirety and that the domain names <twaphone.com> and <twaphones.com> incorporate perhaps the most significant and distinctive portion of Complainant's mark, i.e., “TWA”, and combine it with generic words. As a result, Complainant asserts, “consumers will erroneously believe that Complainant has granted Respondent permission to use the Trademark, when in fact Complainant has not granted such permission.”
Complainant further argues that Respondent has no rights or legitimate interests in the domain names since, to the best of Complainant's knowledge, Respondent owns no trademark registrations or applications including the terms “twa,” “twacommm.com,” “twaphone,” “twaphones,” or any close variants thereof. Complainant also indicates that it has never authorized Respondent to use Complainant's trademark or to register or use the disputed domain names and that Complainant does not have any business relationship with Respondent.
Complainant also maintains that it is not aware of any evidence indicating that Respondent has ever been commonly known by the domain names or that Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain, to mislead or divert consumers, or to tarnish Complainant's mark.
According to Complainant, it has contacted Respondent Chris Manouel but has not been able to work out a mutually acceptable settlement. Complainant reports that Respondent refuses to assign the subject domain names to Complainant unless Complainant purchases Respondent's entire business and that Respondent has only offered to stop redirecting one of the three disputed domain names to a website at “www.fivestarphones.com”, where Respondent sells goods competitive to those of Complainant. Complaint, Annex 4.
Focusing on the issue of “bad faith” registration and use, Complainant asserts that Respondent is a direct competitor and is using the domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of such websites, locations, products, or services offered on such websites or locations.
Complainant further notes that Respondent registered the disputed domain names after issuance of Complainant's United States trademark registration, which registration, according to Complainant, provides constructive notice of Complainant's claim of ownership of the mark dating back to the May 28, 2004, filing date of the application to register the mark.
At one time, Complainant points out, Respondent had all three domain names automatically redirect to Respondent's website at “www.fivestarphones.com”, at which goods directly competitive to those of Complainant are offered. As of the date of the filing of the instant Complaint, Complainant maintains, the domain names <twaphone.com> and <twaphones.com> are still automatically redirected to Respondent's site at “www.fivestarphones.com”. The site at “www.twacommm.com” now displays a parked page that provides links to the sites of many of Complainant's competitors.
Finally, Complainant contends that Respondent is holding the domain names to prevent Complainant from owning the domain names and to unfairly compete with Complainant.
In connection with the issue of “rights or legitimate interests,” Respondent asserts that its proposed website – linked to each of the domain names in issue – is characterized by the trade slogan “Telephones with Attitude”; hence the acronym “TwA.” According to Respondent, the name/slogan is in keeping with a planned marketing strategy, of which the website is merely a part, that promotes an array of collectible, novelty, and/or customized telephones from the past and present to consumers for purchase. Respondent indicates that its business activities focus upon the sale of non-system-based, third-party telephones and associated datacom accessories.
By contrast, Respondent declares, Complainant's business appears to focus upon the sale of business telephone systems and peripherals associated with such – products which are not to be confused with telephone handsets themselves. Respondent indicates that Complainant deals in system equipment and/or system telephones, products which Respondent does not sell. In support thereof, it points to the following statement found at Complainant's website:
“TWAcomm.com offers business telephone systems and small office/home office (SOHO) telephone equipment, as well as popular consumer electronics for your home and office.”
According to Respondent, its planned site and the sites that the domain names currently forward to do not deal with any telephone system equipment. Respondent asserts that it does not deal in telephone systems or telephone control boxes or Keys System Units (KSUs). “Respondent thus is not infringing upon Complainant's customer market and never has.” Respondent contends that “Complainant and Respondent are not competitors as they do not deal in the same goods; one sells the telephones themselves with related accessories (Respondent), while the other sells telephone systems and related accessories (Complainant).”
Respondent argues that the domain names in issue are not confusingly similar to Complainant's registered mark. While Respondent concedes certain facial similarities between “TWAcomm” and “TwACommm,” it notes that the first three letters in Complainant's mark appear in all caps and the following four letters in lower case. In contrast, Respondent asserts, the domain names in issue are a partial acronym for the intended business name “Telephones with Attitude” and, hence, is characterized by the variously capitalized initials “TwA.” Noting that other website registrants choose to incorporate Internet jargon into their domain names or to deliberately misspell certain words, Respondent submits that it should not be penalized for registering the disputed domain name <twacommm.com>.
With regard to the domain names <twaphone.com> and <twaphones.com>, Respondent contends that Complainant's claim to ownership of such domain names is specious at best, “for their claim effectively asserts ownership of the letters “TWA” as applied to communications.” Respondent points out that Complainant does not own a trademark registration for the letters “TWA” and contends that to grant Complainant rights in such letters “would unduly restrain internet commerce insofar as Complainant would logically have a claim then to `any' telephone-based website containing the letters `T-W-A'.”
Respondent further contends that the domain names in issue were not registered in bad faith but were, instead, the product of legitimate business and marketing objectives planned and formulated wholly without knowledge or concern for Complainant's business concerns. Respondent also alleges that Complainant “quite probably infringed” upon a number of industry competitors and, as result, does not approach this Panel with clean hands.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant, as a result of its ownership of a United States trademark registration for the mark TWACOMM.COM and Design and its use of the mark, has rights in such mark.
The Panel concludes that each of the disputed domain names, <twacommm.com>, <twaphone.com>, and <twaphones.com>, is confusingly similar to Complainant's registered mark TWACOMM.COM and Design. In view of the fact that design elements and top-level domains are to be ignored when assessing identity or confusing similarity (see General Machine Products Company v. Prime Domains, NAF No. 92531 (March 16, 2000); The Forward Association, Inc., v. Enterprises Unlimited (NAF No. FA95491, October 3, 2000)), it is clear that the domain name <twacommm.com> is virtually identical to Complainant's mark. The only difference is that the domain name includes an additional letter “m.” The other domain names, <twaphone.com> and <twaphones.com>, incorporate in full the most distinctive aspect of Complainant's mark – the term “TWA” – and merely add the generic term “phone” or “phones.”
The Panel wishes to emphasize that, in assessing identity or confusing similarity in the context of a UDRP proceeding, it is not necessary to engage in an analysis of the likelihood of confusion factors, including the relatedness of the parties' goods and/or services, relevant to the issue of trademark infringement. Rather, with respect to this element of the Policy, the question is merely whether the alphanumeric string constituting the domain name is identical or confusingly similar to the mark in issue. See, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698 (January 25, 2001); Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 (August 23, 2001).
The Panel concludes that Complainant has met its burden of proof in establishing that Respondent does not have rights or legitimate interests in any of the disputed domain names. The Response references a proposed website that is characterized by the slogan “Telephones with Attitude” and contends that such slogan is the genesis of use of the acronym “TwA.” However, this proceeding does not involve Respondent's proposed site but, rather, its current use of the domain names <twacommm.com>, <twaphone.com>, and <twaphones.com> and there does not appear to be any reference to the slogan “Telephones with Attitude” on the sites accessed via these domain names. Moreover, nothing in the record indicates that before any notice to Respondent of the dispute, Respondent made demonstrable preparations to use the domain names in the proposed manner.
The Response also focuses on the contention that the parties are not competitors. However, even if this is true (and the Panel expresses no view on this issue), such fact does not necessarily support a determination that Respondent has rights or legitimate interests in any of its domain names.
The Panel agrees with Complainant that there is no evidence that any of the circumstances set forth in paragraph 4(c) of the Policy is applicable in this case.
The Panel concludes that each of the disputed domain names was registered and is being used in bad faith.3 More specifically, the Panel finds that, by using each of the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its sites or other on-line location by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such sites or location or of the products or services on such sites or location, within the meaning of paragraph 4(b)(iv) of the Policy.
As determined above, each of the disputed domains is confusingly similar to Complainant's mark. The evidence also indicates that the domain names <twaphone.com> and <twaphones.com> lead an Internet user to Respondent's site at “www.fivestarphones.com” and that the domain name <twacommm.com> currently leads Internet users to a page that provides sponsored links to Complainant's competitors. As noted by Respondent, its “fivestarphones.com” site allows Internet users to purchase telephones with related accessories. While Respondent argues that the parties are not competitors since Complainant sells telephone systems, as opposed to telephones, it is clear that the parties' products are sufficiently related so that the use of the disputed domain names <twaphone.com> and <twaphones.com> would result in a likelihood of confusion as to the source, sponsorship, or affiliation of the goods offered at Respondent's “fivestarphones.com” site.4 Similarly, use of the disputed domain name <twacommm.com> would result in a likelihood of confusion as to the source of such site.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <twacommm.com>, <twaphone.com>, and <twaphones.com> be transferred to Complainant.
Jeffrey M. Samuels
Dated: August 6, 2008
1 The registrar indicated that Respondent Domains By Proxy, Inc. is not the registrant of the domain names and that the proper registrant is Chris Manouel. According to the Amended Complaint, Domains By Proxy, Inc. was the former registrant of the domain names in dispute.
2 The original deadline for the filing of a Response was July 3, 2008. Respondent, on June 30, 2008, requested an extension of time to file his Response. Complainant, in an email transmission of June 30, 2008, objected to the extension request. In an email communication of July 4, 2008, the Center granted Respondent's request for an extension of time to file a Response and set the new response date as July 15, 2008.
3 As noted in the Panel's Administrative Panel Order No. 1 of July 29, 2008, Respondent's contention that Complainant is not approaching the Panel with clean hands is not relevant to a UDRP proceeding.
4 In order to support a determination of likelihood of confusion, the parties' goods need not be identical or even competitive. They may only be sufficiently related so that the use of the parties' respective marks (or, in the context of a UDPR proceeding, the parties' respective mark and domain name(s)) on such goods would likely result in confusion as to the source, sponsorship, affiliation, or endorsement of such goods. See, e.g., In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) (“…we find that dresses as well as toiletries, including toilet soap and cologne, are sufficiently related to mens' dress shirts that confusion a[s] to source or origin would be likely from the contemporaneous use of the same or similar mark on said goods.”)